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Course Overview International technology licensing is a business format which is frequently used for business expansion across national boundaries. This conference offers an intensive briefing on all the key factors to be taken into account when dealing with technology licensing agreements - whether as licensor or licensee. It will give sound practical advice and guidance on the legal and commercial skills needed to ensure a successful deal. The conference speakers are all experienced practitioners and the approach taken throughout the conference will be an essentially practical and interactive one. The conference includes hands-on workshop sessions and ample time will be allocated for questions and discussion throughout the programme. Audience - In-house lawyers
- Commercial contract managers
- Business development managers
- Product managers
- Lawyers in private practice
- Licensing executives
Delegates will require an intermediate level of technology licensing experience. Course Outline DAY ONE Introduction to intellectual property - Introduction
- What is a license?
- Why license at all?
- Why license out? Why license in?
- The business of licensing
Different forms of transfer - Exclusive licence
- Non-exclusive license
- Sole licence
- Joint venture and/or licensing
- Trading and/or licensing
- Supply of technical know-how and other trade secrets
- Supply of machinery, components and materials
- Supply of technical services
- Guarantees and performance tests
- Choosing what to license
Valuation of technology - Value - what does this mean?
- Assessing value
- Valuation theories
- Basis of the royalty and other license terms
Royalty terms - Royalty structures
- Royalty rates
- Factors affecting royalty calculation
- Royalty reductions
- Duration of payment
- Mechanics - auditing and payment
European & UK perspective - Overview of the TTBE
- The TTBE in the UK and in the EU
- Interaction between the Commission and the UK Courts
- Current UK law
US licensing and practice - Relevant law provisions
- Antitrust guidelines
- Comparison with European law
Questions and discussion DAY TWO Liability - Governing law
- Liability irrespective of warranties
- Warranties
- Limitation
Exit strategies and dispute resolution - Why do deals go wrong
- Managing the risk
- Use of project management, adjustment mechanisms and dispute resolution provisions
- Terms and termination
- Problems during negotiation
- After exit
Licensing alliances with academic institutions - Why work with academics?
- Industrial vs academic values
- Intellectual property rights - creation, ownership, valuation
- Potential problems and their resolution
Problem clauses in technology licensing agreements - Best or reasonable endeavours clauses
- Improvements clauses
- Time of essence and repudiatory breach clauses
- Boilerplate clauses
Practicals of licensing - Seeking and finding licenses
- Striking the deal
- Negotiation
- Management of licenses
- International technology licensing case study
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